Certplex, Ltd. v. Hasham Malik / NextAge
Claim Number: FA1407001572392
Complainant is Certplex, Ltd. (“Complainant”), represented by Robert A. Auchter of McKool Smith, P.C., Washington D.C., USA. Respondent is Hasham Malik / NextAge (“Respondent”), represented by Divya Kumar Soti, India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <braindumps.biz>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers Served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2014; the National Arbitration Forum received payment on July 30, 2014.
On July 30, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <braindumps.biz> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 31, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@braindumps.biz. Also on July 31, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on August 14, 2014.
Each party filed an Additional Submission. Both were timely. “Complainant’s Additional Submission in Accordance with Supplemental Forum Rule 7” was received on August 19, 2014, and “Respondent’s Additional Submission in Accordance with Supplement Forum Rule 7” was received on August 24, 2014. Both were considered by the Panel.
On August 21, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the BRAINDUMPS mark to sell IT certification test prep materials. Complainant owns the BRAINDUMPS mark through its registration with the United States Patent and Trademark Office ("USPTO"). Complainant applied for registration of the trademark on July 24, 2013; registration of the mark was granted on July 8, 2014. See Complainant’s Exhibit B. Complainant also alleges that it enjoys common law rights in the mark from as early as December 11, 1997 when it registered the <braindumps.com> domain name. Complainant has operated its sales from this domain name continuously since November 30, 2001. The <braindumps.biz> domain name is confusingly similar to the BRAINDUMPS mark as it only differs by the addition of the generic top-level domain (“gTLD”) “.biz.”
Complainant has not authorized Respondent to use the BRAINDUMPS mark in any manner. Further, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods. Respondent uses the disputed domain name to sell a portfolio of knock-off products in the same marketplace as Complainant in an attempt to trade on the goodwill of the BRAINDUMPS mark.
Respondent’s use of the disputed domain name to offer knock-off products that compete with Complainant demonstrates Respondent’s bad faith.
B. Response
Complainant’s claim of right in the “braindump” or “braindumps” term is misplaced as the term is purely generic in nature. Further, Complainant’s use of the BRAINDUMPS mark has not gained secondary meaning.
Respondent has rights and legitimate interests in the <braindumps.biz> domain name. Respondent is in the business of selling braindump keys, help materials, and other services relating to computer certification tests. The Braindumps sold by Respondent are Respondent’s own creation and are well-known for their originality. Additionally, the term “braindumps” is generic.
Respondent registered the domain name on November 17, 2001.
The <braindumps.biz> domain name should not be considered as having been registered and used in bad faith. The term is generic and Respondent’s registration of the disputed domain names predates Complainant’s use of the mark.
C. Additional Submissions
Complainant’s Additional Submission:
The trademark registration for BRAINDUMP is entitled to a presumption of validity. Respondent has done nothing to rebut the presumption that Complainant holds a registered Trademark in the name or term.
Respondent’s use of the domain name as far back as 2002 has copied Complainant’s own websites such as <braindumps.com>.
Respondent’s Additional Submission
Respondent continued to assert in its “Additional Submission” that the Panel should consider the term “braindumps” as generic.
However, Respondent does point out that during the last 15 years, Complainant did nothing to assert rights in a common law mark and waited until the mark was issued in August of 2014. Respondent again points out that it registered <braindumps.biz> as a domain name on November 17, 2001, and began using the domain for commercial purposes on January 30, 2002.
First, it is clear that as a matter of fact, Complainant holds a valid mark, BRAINDUMPS. The Respondent’s registered domain name, <braindumps.biz>, is identical to or confusingly similar.
While Respondent argues that its registration of the <braindumps.biz> domain name predates Complainant’s alleged rights in the mark, and that “braindumps” should be considered a generic term, this Panel finds that such determinations are not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
And, this Panel does not believe that the UDRP is an appropriate process to challenge the validity of mark’s issued by the USPTO.
Complainant may have been the first to use the term or expression “braindumps,” and registered the domain name first, in December 1997. It asserts first use of the term on April 23, 1998. Respondent registered its domain name, <braindumps.biz.> in October of 2001, and began to use the domain commercially in December of 2001.
For thirteen years, the two users co-existed. Then, in 2013, Complainant filed to register the mark BRAINDUMPS and received its registration in 2014. Then, almost immediately, it filed this action seeking to shut down a competitor.
The Respondent has used the name to compete with Complainant during the period, selling competing products to those sold by Complainant.
The Panel finds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent has also shown that the term might well have been considered generic during the twelve or thirteen years between registration of the Complainant’s domain name and the registration of the mark.
Certainly, during that period, Respondent developed rights in the name.
Further, the twelve year history of Respondent’s use does not reflect any element of bad faith. Respondent has asserted, that as a resident of Qatar, it had no knowledge of the existence of a common law mark during that period. Even if there is some presumption that prudent parties investigate competing web sites and names, Respondent has offered some evidence that, at least initially, it could well have viewed the competing domain name as just a registration of a common term like, for example, “computers.com.”
The Panel concludes that Respondent has rights or legitimate interests in the <braindumps.biz> domain name pursuant to Policy ¶ 4(a)(ii), and the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent has not registered or used the <braindumps.biz> domain name in bad faith and has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant who is also seeking to disrupt the Complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)). Here, while there is some evidence of diversion for commercial gain, the diversion cannot have been terribly significant if Complainant waited all of these years to act.
Respondent also contends that the <braindumps.biz> domain name is comprised entirely of a common term that has many meanings apart from use in Complainant’s BRAINDUMPS mark. Moreover, Respondent contends that the registration and use of domain name comprising such a common term is not necessarily done in bad faith. Respondent has submitted online search results and definitions to support its argument that “braindumps” is generic in nature. See Respondent’s Exhibits A-C. The Panel determines that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term. Therefore, the Panel finds that Respondent did not register or use the <braindumps.biz> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Respondent notes that it registered the <braindumps.biz> domain name on November 17, 2001 and has been using the name for commercial purposes since January 30, 2002 to much success. Respondent urges that Complainant admitted that Respondent registered the disputed domain name on November 17, 2001, and points out that the date is at least thirteen days before Complainant began using its <braindumps.com> website to sell IT certification test materials. Previous panels have refused to find bad faith where Respondent’s registration of the disputed domain name predates Complainant’s use of the allegedly infringed mark. See Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (determining the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has met its burden of showing that its mark and the Respondent’s domain name are identical or confusingly similar under Policy Paragraph 4(a)(i). The mark and the domain name are for purposes of the UDRP identical; the mark was duly issued by the USPTO.
However, for approximately 13 years, Respondent used <braindumps.biz> to market products similar or even identical to those marketed by Complainant, all without challenge. Under Policy Paragraph 4(a)(ii), Respondent certainly developed rights or legitimate interests in the name.
Policy Paragraph 4(a) (iii) requires the registration of the domain name by Respondent to have been in bad faith. Here, given the arguably generic nature of the word “braindumps” and Respondent’s long use, the Panel cannot find that the initial registration was in bad faith when that registration occurred thirteen years ago, and the mark held by the Complainant was not issued until just a few months ago.
Doctrine of Laches
Both parties have discussed the doctrine of latches, a legal defense based upon delay in the exercise of some right.
Respondent
Respondent argues that Complainant waited for years to file this UDRP case despite the fact this domain name is identical to its alleged trademark. The doctrine of laches supports a finding for Respondent. See Square Peg Interactive Inc. v. Naima Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant's delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”); see also Meat & Livestock Common v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
Complainant
Complainant claims it cannot be found to have rested on its rights too long. Complainant has long used its mark in commerce, but thought it prudent to wait to enforce a UDRP action only after its BRAINDUMPS mark was registered. This registration occurred only in 2014. Complainant asks the Panel choose to disregard Respondent’s assertions. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Because the application of the doctrine of latches is unnecessary, the Panel would only point out that the Panel’s decisions concerning “rights in the name” and “bad faith” are based upon Complainant’s failure to act to protect its rights for approximately thirteen years.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <braindumps.biz> domain name REMAIN WITH Respondent.
R. Glen Ayers, Panelist
Dated: September 8, 2014
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